Itty Bitty City, LLCv.Microduino, Inc.

Trademark Trial and Appeal Board

Sep 12, 2019

91240993 (T.T.A.B. Sep. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Itty Bitty City, LLC

v.

Microduino, Inc.
_____

Opposition No. 91240993
to Serial No. 87428940
_____

Fawn R. Rechkemmer of Itty Bitty City, LLC, pro se.

Jackson MacDonald, MAC Legal LLC for Microduino, Inc.
_____

Before Cataldo, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Microdunio, Inc. (“Applicant”) filed an intent to use-based application to register
the mark ITTY BITTY CITY (standard character claim) for:
Electronic learning toys; all the foregoing excluding
providing interactive play areas, instructional classes in
the field of preschool and elementary school curriculum
and social gatherings for children, in International Class
28.1

1 Application Serial No. 87428940 was filed on April 27, 2017, under Section 1(b) of the
Opposition No. 91240993
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Itty Bitty City, LLC (“Opposer”) opposes the registration of Applicant’s mark on
the ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act of 1946, 15 U.S.C. §1052(d), based on its ownership of Registration No. 5264204
for the mark ITTY BITTY CITY (standard character claim) for:
Educational and entertainment services for children,
namely, providing interactive play areas, instructional
classes in the field of preschool and elementary school
curriculum and social gatherings for children, in
International Class 41,
which alleges dates of first use and first use in commerce on April 1, 2016 and August
1, 2016, respectively.2 Opposer further alleges that it first used its mark prior in time
to the date of first use asserted by Applicant. These allegations are set forth in the
amended notice of opposition, which is the operative pleading in this case.3
In its “Answer to the Amended Notice of Opposition Filed on August 13, 2018,”
Applicant denied the salient allegations and alleged Affirmative Defenses and
Amplifications, including priority of use; that its goods are not related to, overlapping
with or competitive with Opposer’s goods or services; that Applicant’s consumers are
sophisticated and discerning; and the target consumers of the parties differ

Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 5264204 issued on the Principal Register on August 15, 2017.
3 See “Opposer’s Motion to Amend Notice of Opposition Filed on May 28, 2018” filed on August
13, 2018. 12 TTABVUE. In response, Applicant filed its “Answer to the Amended Notice of
Opposition Filed on August 13, 2018” on August 27, 2018. 13 TTABVUE.
TTABVUE citations refer to the docket entry number and where applicable, the electronic
page number where the document, evidence or testimony appears; the Trademark Status &
Document Retrieval (“TSDR”) citations refer to the electronic file database for trademark
applications and registrations. All citations to the TSDR database are to the downloadable
.pdf version of the documents and, where applicable, include the electronic page number
where the document(s) appears.
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significantly and do not overlap.4 Applicant’s defenses are not true affirmative
defenses but constitute amplifications of Applicant’s denials of the allegations of
likelihood of confusion. See Trademark Rule 2.106(b)(1), 37 CFR §2.106(b)(1);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 311.02(b)
(June 2018).5
I. Accelerated Case Resolution
The parties agreed to resolve this proceeding by Accelerated Case Resolution
(“ACR”) in lieu of trial during a telephone conference with the Board Interlocutory
Attorney. The Board’s Order of October 31, 2018, approved the parties’ stipulation to
proceed by ACR and their agreement regarding the ACR procedure for this case as
set forth therein namely, that in lieu of trial, the Board can resolve any issues of
material fact that may be presented by the record or which may be discovered by the
panel considering including a proposed schedule for the close of discovery and the
submission of briefs and evidence; all documents produced by either party during
discovery shall be deemed “authentic” under the Federal Rules of Evidence; and
provided for the submission of testimony by written declarations and affidavits.6
We note that regardless of an ACR stipulation, Opposer, as the party in the
position of plaintiff in this proceeding, bears the burden of proof, requiring Opposer
to prove its case by a preponderance of the evidence. B&B Hardware, Inc. v. Hargis

4 13 TTABVUE 3.
5 This is the edition of the TBMP in force as of the filing date of Applicant’s Answer to the
Amended Notice of Opposition.
6 See October 31, 2018 Order (16 TTABVUE 2-4).
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Industries, Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015) (“The party opposing
registration bears the burden of proof, see §2.116(b), and if that burden cannot be
met, the opposed mark must be registered, see 15 U. S. C. §1063(b)”);
Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307,
1311 (Fed. Cir. 1989) (plaintiff’s burden is to establish the case by a preponderance
of the evidence).
In accordance with their stipulation, both parties filed ACR briefs, and Opposer
filed a reply ACR brief.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. In addition, the parties
submitted the following testimony and evidence.
Opposer’s Evidence
Exhibit 2: Registration No. 5264204 for ITTY BITTY
CITY from the Trademark Electronic Search System
(TESS) (17 TTABVUE 23)7;
Exhibit 3: State of Missouri Certificate of Organization of
Itty Bitty City, LLC certified by the Secretary of State of
Missouri (17 TTABVUE 24);
Exhibit 4: advertising copy from Opposer’s website for Itty
Bitty City toys and Itty Bitty City (17 TTABVUE 25);
Exhibits 5A-5J: Advertising and promotions featuring
ITTY BITTY CITY (17 TTABVUE 26-54);

7 Opposer’s Exhibit 1 is not admitted into evidence inasmuch as it is merely a photocopy of
Registration No. 5264204. 37 CFR § 2.122(d), TBMP 704.03(b)(1)(A).
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Exhibit 6A: Charity/Non-profit donations (17 TTABVUE
55-58);
Exhibit 6B: Letter of Intent between Kickapoo Corners
and Itty Bitty City, LLC (17 TTABVUE 59-60);
Exhibit 6C: July 19, 2015 email correspondence regarding
Cubetto (17 TTABVUE 61-63);
Exhibit 6D: promotion for Cubetto by Itty Bitty City on
the Internet (17 TTABVUE 64);
Exhibit 7A: TESS search summary page (17 TTABVUE
65);
Exhibit 7B-C: Emails regarding possible infringement
due to Microduino Inc.’s trademark application (17
TTABVUE 66-68);
Exhibit 8: Customer Zip Code Report (17 TTABVUE 69-
71);
Exhibit 9: Itty Bitty City, LLC sales on Internet,
Amazon.com shipment emails (17 TTABVUE 72-113);
Exhibit 10: Microduino Inc.’s Itty Bitty City listing on
https://microduinoinc.com/about/ (17 TABVUE 114);
Exhibit 11A-11C: website screenshots featuring Itty Bitty
City magnetic wooden blocks (17 TTABVUE 115-119);
Exhibit 12A-12B: posts regarding Itty Bitty City on
Facebook.com (17 TTABVUE 120-121);
Exhibit 13: August 16, 2017 letter to Itty Bitty City in
Chicago, IL regarding Infringement of the Itty Bitty City
trademark (17 TTABVUE 122);
Exhibit 14A-14B: June 20, 2018 email from Amazon
Seller Support regarding Amazon Brand Registry and Itty
Bitty City registered brand Amazon Storefront (17
TTABVUE 123-124);
Exhibit 15: Amazon search results for “Itty Bitty City” (17
TTABVUE 124);
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Exhibit 16A-16B: image of Itty Bitty City magnetic
wooden blocks (17 TTABVUE 125);
Exhibit 17: GS1 Company Prefix Certificate licensed to
Itty Bitty City, LLC (17 TTABVUE 126);
Exhibits 18A-18C: internet listings and press release
regarding Itty Bitty City’s magnetic wooden blocks receive
Dr. Toy’s Best Pick Award (17 TTABVUE 127-129);
Exhibit 19A-19B: Kids & Kameras at Itty Bitty City, Itty
Bitty City Music Makers Club (17 TTABVUE 130-131);
Exhibit 20: www.businessdictionary.com/definition/brand
.html with comment regarding Itty Bitty City and
https://sellercentralamazon.com/inventory regarding 37
Itty Bitty City, LLC products (17 TTABVUE 132-133);
Exhibit 21: screen shot of Microduino Itty Bitty City Video
(17 TTABVUE 133);
Exhibit 22: Report: Daily Summary Saturday October 01,
2016 to Friday November 30, 2018 (17 TTABVUE 134);
Exhibit 23: 2/8/2018 Office Action for Serial No. 87428940
(17 TTABVUE 135-140);
Exhibit A: portion of 2/8/2018 Office Action for Serial No.
87428940 (also provided in its entirety as Exhibit 23 in
Opposer’s ACR Brief) (19 TTABVUE 13-15);
Exhibit B: Opposer’s Responses to Applicant’s First Set of
Requests for Document and Things (only evidence
referenced in Opposer’s Reply Brief provided) (19
TTABVUE 16-64);
Exhibit C: Applicant’s ACR Brief (19 TTABVUE 65-81).
Applicant’s Evidence
Exhibit A: Opposer’s Responses to Applicant’s First Set of
Interrogatories (18 TTABVUE 18-28);
Exhibit B: http://ittybittycity/visit-us/tour/ (18 TTABVUE
29-31);
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Exhibit C: Definition of “itty-bitty” from dictionary.com
(18 TTABVUE 32-36);
Exhibit D: Amazon.com: Microduino Itty Bitty City,
Educational STEM Toy to Learn Building, Coding and
Electronics, 8-in-1 Creativity Project for Kids Aged 8+ . . .
(18 TTABVUE 37-48);
Exhibit E: Itty Bitty City https://microduinoinc.com/itty-
bitty-city/ (18 TTABVUE 49-58);
Exhibit F: Itty Bitty City https://ittybitty.city/about/ (18
TTABVUE 59-61).

III. Evidentiary Objection
Opposer declined the Board’s invitation to further amend its pleading set forth in
the order of October 31, 2018, and therefore cannot rely upon its common law priority
and likelihood of confusion claim. See Bell Atlantic Corp. v. Twombly, 550 U.S. 554,
570 (2007); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007)
(elements of each claim should be stated concisely and directly, and include enough
detail to give the defendant fair notice). Inasmuch as the Board sua sponte dismissed
Opposer’s claim based on common law use of its mark, and Opposer stated it would
rely solely on its pleaded registration for its § 2(d) claims,8 Applicant objects to any
evidence and arguments relating to the common law claim. We agree that Opposer’s
§ 2(d) claim is limited to its pleaded Registration and any evidence submitted is only
considered with respect to that claim.

8 See October 31, 2018 Order (16 TTABVUE 2).
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IV. Standing and Priority
Opposer bears the burden of proving both standing to oppose and at least one valid
ground for refusal of registration. Ritchie v. Simpson, 170 F.3d 1092, 1095, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999); Sanyo Watch Co., Inc. v. Sanyo Electric Co.,
Ltd., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982). Because Opposer has
properly made its pleaded Registration for the ITTY BITTY CITY mark of record,9
Opposer has established standing to oppose registration of Applicant’s mark.
Additionally, Opposer’s priority is not an issue as to those services covered by
Opposer’s registration. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
V. Likelihood of Confusion
In determining the likelihood of confusion, we must analyze all of the probative
facts in evidence that are relevant to the factors set forth in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (DuPont
“articulated thirteen factors to consider when determining likelihood of confusion”).
“‘Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered,’” id. (quoting In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); M2 Software, Inc.

9 Opposer’s Exhibit 2 (17 TTABVUE 23).
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v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even
within DuPont list, only factors that are “relevant and of record” need be considered).
Two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods,
Inc. v. Fort Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We
have also considered other DuPont factors namely, the similarity of trade channels;
the conditions under which and buyers to whom sales are made; and the nature and
extent of actual confusion, for which the parties have submitted evidence or
argument.
Similarity of the Marks
We first consider the DuPont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. In a particular case, any one of these means
of comparison may be critical in finding the marks to be similar. See Cai v. Diamond
Hong, 127 USPQ2d at 1800.
To the extent that Applicant’s mark is identical to Opposer’s mark, they are
similar overall in sound, appearance and meaning. However, Applicant contends that
its mark and Opposer’s registered mark, when considered in the context of use and
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in relation to the parties’ respective goods and services, convey different commercial
impressions that overcome other similarities in the marks and prevent confusion.10
In determining the commercial impressions or connotations created by the marks
we must consider the marks in relation to the parties’ identified goods. See Coach
Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff’d 668
F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Embarcadero Technologies Inc. v.
RStudio Inc., 105 USPQ2d 1825, 1835 (TTAB 2013).
Inasmuch as Applicant’s proposed mark ITTY BITTY CITY is to be used on
“electronic learning toys,” it connotes the same meaning or commercial impression as
that of Opposer’s identical mark used for “providing interactive play areas,
instructional classes in the field of preschool and elementary school curriculum and
social gatherings for children.” The goods and services are related to learning
including instructional classes for children and therefore, the identical marks have
the same or similar meaning and commercial impression.
Applicant’s citation to Coach Servs. v. Triumph Learning, 101 USPQ2d at 1721
(despite the identity in appearance and sound of the COACH marks, they have
different meanings and create distinct commercial impressions); Blue Man Prods.
Inc. v. Tarmann, 75 USPQ2d 1811, 1820-21 (TTAB 2005) (finding that BLUE MAN
GROUP “has the connotation of the appearance of the performers” and that
applicant’s BLUEMAN mark “has no such connotation for cigarettes or tobacco. Thus,
the marks differ in their connotations and commercial impressions.”); and In re Sears,

10 Applicant’s ACR Brief p. 10 (18 TTABVUE 11).
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Roebuck and Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (applicant’s mark CROSS-
OVER for brassieres is suggestive of their construction and CROSSOVER for ladies’
sportswear has no such meaning; finding that, “[a]s a result of their different
meanings when applied to the goods of applicant and registrant, the two marks create
different commercial impressions, notwithstanding the fact that they are legally
identical in sound and appearance”) does not support its position as those cases are
different than the situation in this case. The Coach and Blue Man cases involved non-
related goods of applicant and registrant. 101 USPQ2d at 1722; 75 USPQ2d at 1820.
In Sears Roebuck, the applicant and registrant had entered into a prior consent
agreement wherein they not only consented to the use of the other’s mark but also
expressed their belief that there was no likelihood of confusion due to the differences
in their respective goods. 2 USPQ2d at 1313-14. Here, the parties’ marks are used in
connection with Applicant’s electronic learning toys and Opposer’s interactive play
areas and instructional preschool and elementary school classes. Thus, both marks
are used in connection with goods and services for children’s learning, resulting in
the marks being not only similar in sound, appearance and meaning but also in
commercial impression.
Applicant also argues that given Opposer’s definition of the words “itty bitty” in
its mark as “children” and the word “city” in its mark as “creative play,”11 Opposer’s
services are provided in connection with a physical “itty bitty city,” or creative play

11 See Applicant’s Exhibit A, Response to Interrogatory Numbers 3 and 4, Opposer’s Response
to Applicant’s First Set of Interrogatories. (18 TTABVUE 18-20).
Opposition No. 91240993
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area for children concluding that when Opposer’s mark is viewed in connection with
its services, “it obviously refers to Opposer’s physical location featuring a small
creative play area for children.”12 In contrast, Applicant contends that its mark, when
used in connection with its “electronic learning toys,” does not present any meaning
or commercial impression associated with a creative play area or any physical
location.13
Applicant overlooks that its ITTY BITTY CITY product is marketed as a “project
for kids” which involves constructing small cityscapes.14 Opposer’s logo features its
name and trademark ITTY BITTY CITY used in connection with a city scene (shown
below):
15
on signage for its building, its website and in promotional and advertising
materials.16 Accordingly, Applicant and Opposer both use the term ITTY BITTY CITY
to convey a similar “city” theme in connection with their goods and services. Thus,
their identical marks are likely to be confused.

12 Applicant’s ACR Brief pp. 10-11 (18 TTABVUE 11-12).
13 Applicant’s ACR Brief p. 11 (18 TTABVUE 12).
14 See Applicant’s Exhibit D (18 TTABVUE 37-38).
15 Image reproduced from Opposer’s Exhibit 18-C (17 TTABVUE 128).
16 See e.g., Opposer’s Exhibits 4, 5A-B, D-E, F, G2-3, 18C, 19B (17 TTABVUE 25-28, 31-32,
34, 39-47, 128, 131).
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Similarity of the Goods/Services, Trade Channels and Class(es)
of Purchasers
The second DuPont factor involves consideration of the “similarity or dissimilarity
and nature of the goods or services as described in an application or registration.”
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1159 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Where the marks of the respective
parties are identical, as we have here, the degree of similarity or relatedness between
the goods and/or services needed to support a finding of likelihood of confusion
declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866
F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Inasmuch as Applicant’s electronic learning toys could be used in connection with
Opposer’s preschool and elementary educational services, consumers could
reasonably presume that the goods and services bearing the identical mark originate
from a common source. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise
store services likely to be confused with BIGGS for furniture); In re United Serv.
Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distribution services
in the field of health and beauty aids likely to be confused with design for skin cream);
In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE
(stylized) for retail women’s clothing store services and clothing likely to be confused
with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare
Opposition No. 91240993
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Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of
furniture, office furniture, and machinery likely to be confused with STEELCASE for
office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc. 177
USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor
trucks and buses likely to cause confusion); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1207.01(a)(ii) (Oct. 2018).
Applicant’s attempt to limit the scope of its goods by adding the language, “all the
foregoing excluding providing interactive play areas, instructional classes in the field
of preschool and elementary school curriculum and social gatherings for children”
does not obviate a finding that the goods and services are similar. Although Applicant
has restricted its goods to indicate they do not include the services offered by Opposer,
Opposer’s related services have no restriction. Thus, Opposer could offer electronic
learning toys for sale along with its services under its identical mark. Moreover,
customers seeing Applicant’s identical mark on its goods may not be aware that the
use of its mark is limited. The precatory language in Applicant’s identification of
goods excluding Opposer’s services is not binding on consumers when they encounter
Applicant’s mark. See In re i.am.symbolic, 116 USPQ2d at 1410, aff’d, 866 F.3d 1315,
123 USPQ2d 1744 (Fed. Cir. 2017). Cf. M2 Software Inc. v. M2 Communications Inc.,
450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (based on restrictions to specific
industries in both of the identifications of goods in opposer’s registration and
applicant’s application, the goods are unrelated and travel in different trade channels
to different purchasers) (emphasis added). Therefore, the explicit exclusion of
Opposition No. 91240993
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Opposer’s services from Applicant’s identification of goods does not lessen the
similarity of Applicant’s goods and Opposer’s services.
Additionally, the evidence from the USPTO’s X-Search database attached to the
Office Action of February 8, 2018, consisting of three third-party marks17 registered
for use in connection with the same or similar goods and services as those of both
Applicant and Opposer is additional evidence that their goods and services, namely
electronic educational toys and educational classes, are of a kind that may emanate
from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122,
1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); TMEP §1207.01(d)(iii) (Third-party registrations that cover a number
of different goods or services may have some probative value to the extent that they
may serve to suggest that goods or services are of a type that may emanate from a
single source, if the registrations are based on use in commerce.); Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)
(evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to the relatedness analysis”); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988)).

17 See Opposer’s Exhibit 23 (17 TTABVUE 135-140). Registration Nos. 5286642 for SHARE
THE HAPPY, 5193905 for M (design), and 5295103 for BRAINMATTERS.
Registration Nos. 5314534 for MRS WORDSMITH and 5332535 for BOOMONS & design,
were issued under § 44 of the Trademark Act, 15 U.S.C. § 1126(e), based on foreign
registrations and not based on use in commerce, and have little, if any, persuasive value. See
Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011);
TMEP 1207.01(d)(iii).
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Next, we consider whether Applicant’s and Opposer’s services travel in the same
trade channels to the same class of purchasers. Because there is no limitation as to
trade channels or classes of purchasers in the identification of Applicant’s goods or
Opposer’s services, it is presumed that the identifications encompass all goods and
services of the type described, that they move in all normal trade channels for such
goods and services, and that they are available to all potential customers for such
goods and services. See Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1162;
Octocom Sys. v. Houston Comptr. Servs., 16 USPQ2d at 1787; CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“[W]here the likelihood of confusion is
asserted with a registered mark, the issue must be resolved on the basis of the goods
named in the registration and, in the absence of specific limitations in the
registration, on the basis of all normal and usual channels of trade and methods of
distribution.”); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77-78 (CCPA 1973).
Applicant’s argument that Applicant and Opposer provide their goods and services
in different trade channels to different classes of customers has little merit.18 It is
well-settled that the issue of likelihood of confusion between applied-for and
registered marks must be determined on the basis of the goods and services as they
are identified in the involved application and registration. Paula Payne v. Johnson

18 Applicant’s ACR Brief p. 13 (18 TTABVUE 14).
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Publ’g, 177 USPQ at 77. See also J & J Snack Foods Corp. v. McDonald’s Corp., 18
USPQ2d 1889, 1882 (Fed. Cir. 1991).
Apart from Applicant’s argument, there is no evidence supporting different
channels of trade or different purchasers for Applicant’s goods and Opposer’s
services.19 Given the relationship between Applicant’s electronic educational toys and
Opposer’s educational services both of which are intended for children and are
typically purchased by adults on their behalf, at least some of Applicant’s customers
are part of the general purchasing public for Registrant’s services. Thus, the channels
of trade and classes of purchasers overlap. This overlap weighs in favor of a finding
of likelihood of confusion. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
In view of the foregoing, we find that the goods and services are related, travel in
the same channels of trade, and are sold to the same classes of purchasers, supporting
a likelihood of confusion under the second and third DuPont factors.
Actual or Potential Confusion
Evidence of actual confusion, where it exists is very probative in a likelihood of
confusion analysis. See Edom Labs, Inc. v. Lichter, 102 USPQ2d 1546, 1553 (TTAB
2012) (“The existence of actual confusion is normally very persuasive evidence of
likelihood of confusion and undercuts any possible claim that the marks are so
dissimilar that there can be no likelihood of confusion.”). While a showing of actual
confusion may be highly probative, if not conclusive, of a likelihood of confusion, the

19 Applicant’s ACR Brief pp. 13-14 (18 TTABVUE 14-15).
Opposition No. 91240993
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opposite is not true; an absence of evidence of actual confusion carries little weight.
See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir.
2003); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA
1965). Furthermore, it has often been recognized that such evidence is difficult to
obtain. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834
(TTAB 2012). Therefore, it is not necessary to show instances of actual confusion to
establish likelihood of confusion. Herbko Int’l. Kappa Books, 64 USPQ2d at 1380;
Weiss Assocs., Inc. v. HRL Assocs,. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed
Cir. 1990).
Opposer’s evidence consists of a visitor Facebook post sent to Opposer inquiring
about customer service for an “Itty Bitty City” and a Facebook inquiry received by
Opposer from a business inquiring about distribution in Oceania.20 The visitor
Facebook post does not identify the “Itty Bitty City” product as Applicant’s product
(or anyone’s product) and the second piece of evidence involves someone interested in
distributing product outside of the United States. Therefore, neither of these are
evidence of actual confusion.
Inasmuch as the issue before us is the likelihood of confusion, not actual confusion,
this DuPont factor is neutral.
VI. Conclusion
Applicant’s mark is identical to Opposer’s mark. Additionally, based on the related
nature of Applicant’s electronic learning toys to the instructional preschool and

20 See Opposer’s Exhibit 12A-12B (17 TTABVUE 120-121).
Opposition No. 91240993
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elementary school curriculum classes in Opposer’s registration, and the identical or
similar trade channels and classes of customers, the DuPont factors of the similarity
of the goods and services, trade channels and customers also favor a finding of
likelihood of confusion. Any remaining DuPont factors either favor a finding of
likelihood of confusion or are neutral. Therefore, we find that Applicant’s mark so
resembles Opposer’s pleaded registered mark as to be likely to cause confusion or to
cause mistake or to deceive.
Decision: In view of the foregoing, the opposition to Application Serial No.
87428940 is sustained and registration is refused.